The Complainant is AB Electrolux of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is Pham Van, CTY TNHH Thuong Mai Dich Vu Dien Lanh Viet Thai of Ho Chi Minh, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with GMO Internet, Inc. d/b/a Discount-D and O (the “Registrar”). 3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2016. On November 30, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 1, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On December 2, 2016, the Center notified the Parties in both English and Japanese that the language of the Registration Agreement for the Disputed Domain Name was Japanese. On December 3, 2016, the Complainant requested for English to be the language of the proceeding, to which the Respondent did not reply.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, in both English and Japanese, and the proceedings commenced on December 9, 2016.
In accordance with the Rules, paragraph 5, the due date for Response was December 29, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2017.
The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on January 16, 2017. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant, AB Electrolux, is a Swedish joint stock company founded in 1901. The Complainant is one of the world’s leading producers of appliances and equipment for kitchen and cleaning products and floor care products, who is selling many home and professional appliances. In 2014, Electrolux had sales of SEK 112 billion and about 60,000 employees.
The Complainant is the owner of a number of internationally registered trademarks ELECTROLUX, both in word and figurative forms, alone and in combination with other elements, in several classes in more than 150 countries all over the world. The Complainant further evidenced that it holds International trademark registration No. 836605 registered on March 17, 2004 for goods and services in Classes 3, 7, 9, 11, 12, 21, 25, 35, 37 and 39, and International trademark registrations designating Viet Nam including International trademark No. 1126087 registered on July18, 2012 for goods in Class 7 and International trademark No. 1260775 registered on January 27, 2015 for goods and services in Classes 7, 9, 11, 21, 26, 35, and 37.
The Complainant also owns numerous domain names under generic Top-level Domains (“gTLD”) and country-code Top-level Domains (“ccTLD”) containing the term “electrolux”, among which is the domain names and .
Finally, through its extensive use, the Complainant has gained over the years substantial reputation internationally for its Electrolux products.
The Respondent registered the Disputed Domain Name on October 20, 2015. The website under the Disputed Domain Name has been under operation for promotion of the Respondent’s services in repairing wide range of products under the Electrolux brand.
As indicated in the case file, the Complainant’s attorneys sent to the Respondent a cease-and-desist letter on August 25, 2016 and a reminder on September 1, 2016, in which the Complainant asked for, amongst others, a voluntary transfer of the Disputed Domain Name. However, the Respondent did not reply. 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant contends that the Complainant is and has been for many years the rights holder of the trademark ELECTROLUX (the “trademark”) in numerous countries worldwide, including in Viet Nam. The Electrolux brand is the Complainant’s flagship brand for kitchen and cleaning appliances for both consumers and professional users. The trademark well predates the Respondent’s registration of the Disputed Domain Name.
The Complainant further contends that the Disputed Domain Name is confusingly similar to the Complainant’s trademark, as it comprises the word “electrolux”, which is identical to the trademark, and the addition of the generic and descriptive Vietnamese words “baohanh”, “sửa” and “chứa” (which means “guarantee”, “repair” and “accommodate” in English) does not materially change the confusingly similar conclusion.
Finally, the Complainant submits that the addition of the gTLD “.net” in the Disputed Domain Name does not add any distinctiveness to the Disputed Domain Name.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Complainant submits that the intention of the Respondent in registering the Disputed Domain Name is to take advantage of the Internet traffic generated due to the incorporation of the well-known ELECTROLUX trademark in the Disputed Domain Name by arguing that: (i) the Respondent is not commonly known by the Disputed Domain Name; and (ii) there is no evidence that the Respondent has a history of using, or preparing to use the Disputed Domain Name in connection with a bona fide offering of goods and services.
The Complainant further submits that the Respondent is using the Disputed Domain Name incorporating the Complainant’s trademark to attract Internet users to their website where they offer repair and maintenance services for Electrolux by arguing that: (i) the Complainant has no agreement with the Respondent and granted neither license nor authorization of any other kind to the Respondent for the registration and use of the Dispute Domain Name incorporating the Complainant’s trademark; (ii) the Respondent’s prominent use of the Complainant’s trademark and logo on the top section of the website at the Disputed Domain Name strongly suggest that the Dispute Domain Name is in a connection with the Complainant in some ways or the Respondent has some official or authorized relationship with the Complainant for the purposes of repair services in Viet Nam.
The Complainant also contends that no disclaimer can be found on the page of the Respondent’s website where information is given about the Respondent and its services.
Further, the Complainant refers to the case Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“Oki Data”) and submits that the Respondent’s conduct does not meet the Oki Data criteria on three elements: (i) the Respondent does not publish a disclaimer on the website; (ii) the Respondent is depriving the Complainant of reflecting its own mark in the Disputed Domain Name; and (iii) the Respondent presents itself as the trademark owner by using the Complainant’s official ELECTROLUX trademark and logo in its website.
Finally, the Complainant submits that the Respondent’s use of the Disputed Domain Name cannot be considered as legitimate use by arguing that: (i) the Respondent was aware of the Complainant’s trademark prior to the acquisition of the Disputed Domain Name and the establishment of the Respondent’s website; and (ii) the Respondent is not known by the Disputed Domain Name, nor does the Respondent claim to have made legitimate, noncommercial use of the Disputed Domain Name; and (iii) the Respondent failed to present some compelling arguments that it has rights in the Disputed Domain Name.
(iii) The Disputed Domain Name was registered and is being used in bad faith.
First, the Complainant submits that the Disputed Domain Name is registered in bad faith by arguing that: (i) the Respondent was aware of the existence of the Complainant’s trademark and unlawfulness of the registration of the Disputed Domain Name as the Complainant’s trademark registration predates the registration of the Disputed Domain Name; (ii) the Respondent has failed to respond to any communication attempts made by the Complainant, which can be considered relevant for a finding of bad faith.
Second, the Complainant submits that the Disputed Domain Name is being used in bad faith.
The Complainant contends that the Complainant first tried to contact the Respondent on August 25, 2016 through a cease-and-desist letter and a reminder on September 1, 2016, under which the Complainant requested, amongst others, a voluntary transfer of the Disputed Domain Name. However, the Respondent has not yet replied and simply disregarded all communication attempts and notices given by the Complainant, which can be considered relevant in a finding of bad faith.
The Complainant further argues that the Respondent has never been granted permission to register the Disputed Domain Name and the Respondent intentionally chose the Disputed Domain Name based on a registered and well-known trademark in order to generate more traffic to its own business as a repair center. In addition, the Respondent does not disclose on the Disputed Domain Name the non-existing relationship between it and the Complainant. Consequently, the Respondent is using the Disputed Domain Name to intentionally attempt to attract, for commercial gain, Internet users to the website under the Disputed Domain Name, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the website.
Therefore, the Complainant contends that the Respondent should be considered to have registered and to be using the Disputed Domain Name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Procedural Issues
(i) Language of the Proceeding
The Complaint was filed in English on November 29, 2016. On December 1, 2016, the Registrar informed that the language of the Registration Agreement is Japanese.
As the Complaint was filed in English, the Center, in its notification dated December 2, 2016 in English and Japanese, invited the Complainant to submit either (i) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceeding should be in English, or a translation of the Complaint in Japanese, or (ii) a substantiated request for English to be the language of the proceeding.
On December 3, 2016, the Complainant submitted that it had requested that English be the language of the proceeding under section IV of its Complaint.
According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Similar to previous UDRP decisions, the Panel finds that the spirit of paragraph 11(a) is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfortability with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors (see, e.g., Deutsche Messe AG v. Kim Hyungho,WIPO Case No. D2003-0679).
In the present case, in consideration of the above circumstances of the proceeding, including, but not limited to,
(i) the nationality of the Parties;
(ii) the fact that the Complainant, a Swedish business entity, does not appear to be able to communicate in Japanese, and therefore, if the Complainant was required to have the documents translated into Japanese, the proceeding would be unduly delayed, and the Complainant would have to incur substantial expenses for translation;
(iii) the Respondent did not submit any request concerning the language of the proceeding;
(iv) English is a popular language in Viet Nam, where the Respondent is located, making it likely to be understandable to the Respondent;
and for the purpose of easy comprehension of the Complainant (the only party actively taking part in the proceeding) of the Panel’s decision without any necessity of translations, and in the interest of fairness to both Parties as well as the Panel’s obligation under paragraph 10(c) of the Rules, which provides that “the Panel shall ensure that the administrative proceeding takes place with due expedition”, the Panel hereby decides, under paragraph 11(a) of the Rules, that the language of the proceeding shall be English and shall render its decision in English.
(ii) The Respondent’s Failure to Respond
The Respondent’s failure to file a response does not automatically result in a decision in favor of the Complainant (see, e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn,WIPO Case No. D2010-1413 and M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent’s default.
In accordance with paragraph 4(a) of the Policy, in order to decide on the remedy sought by the Complainant, the Panel will examine whether each of the following three elements are present:
(i) the Disputed Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith. B. Identical or Confusingly Similar
The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the Disputed Domain Name is identical or confusingly similar to its trademark.
First of all, the Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to ELECTROLUX well before the Disputed Domain Name was registered. Also, the Complainant has sufficiently demonstrated and evidenced that it had a lengthy use of its trademark for its commercial activities, and in particular to offer kitchen and cleaning appliances for both consumers and professional users worldwide.
Secondly, the Disputed Domain Name comprises the Complainant’s distinctive and widely-known ELECTROLUX mark in which the Complainant has exclusive rights. The difference between the Disputed Domain Name and the trademark is the addition of the prefixes “baohanhsuachua”, of which “baohanh” can be written with accent marks as “bảo hành” in Vietnamese and means “warranty” in English; and “suachua” can be written with accent marks as “sửa chữa” in Vietnamese and means “repair” in English. Despite the fact that “baohanh” and “suachua” themselves have no meaning in English, Vietnamese customers are likely to perceive it as “bảo hành” (“warranty” in English) and “sửa chữa” (“repair” in English) respectively. Thus, this prefix “baohanhsuachua” should be considered as a descriptive term. The Panel finds that “electrolux” remains the dominant element in the Disputed Domain Name. It is well established that the addition of a descriptive terms (such as “baohanhsuachua”) to a trademark does not prevent confusing similarity, thus, in the Panel’s view, the addition of the said prefix does nothing to distinguish the Disputed Domain Name from the trademark, nor to dispel the confusing similarity, as it was found in previous UDRP decisions (see, e.g., AB Electrolux v. Ilgaz Fatih Micik,WIPO Case No. D2009-0777; Aktiebolaget Electrolux v. ibp,WIPO Case No. D2013-0795; AB Electrolux v. Ong Bui TrungKien,WIPO Case No. D2012-2320).
Thirdly, the Panel finds, similarly to other UDRP panels, that the addition of the gTLD “.net” to the Disputed Domain Name does not constitute an element so as to avoid confusing similarity for trademark purposes (see, e.g., Volkswagen AG v. Privacy Protection Services, WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz,WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc.,WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s ELECTROLUX trademark, and the first element under paragraph 4(a) of the Policy is established. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:
“When you receive a complaint, you should refer to paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
The Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization of any kind to use the Complainant’s trademark has been granted to the Respondent and there is no evidence that the Respondent holds such rights. Thus, the Respondent has no rights in the trademark ELECTROLUX.
Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have rights or legitimate interests in the domain name if its use meets certain requirements, which are described in the decision Oki Data Americas, Inc. v. ASD, Inc,supra :
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);
- the site itself must accurately disclose the respondent’s relationship with the trademark owner; and
- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.
The Panel finds, similarly to other UDRP panels, that the Oki Data criteria are appropriate even when the respondent is not an authorized reseller, such as it is the case in this dispute (see, e.g., National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc.,WIPO Case No. D2007-1524).
However, in this particular case, the Panel finds that the Respondent does not fulfill the Oki Data criteria. On the website under the Disputed Domain Name, the Respondent does not place any statement or disclaimer disclosing the lack of its relationship with the Complainant, but instead it states on the website under the Disputed Domain Name that it is “Công ty bảo hành sửa chữa Electrolux Việt Thái” (“Electrolux Viet Thai Maintenance and Repair Company”), while the registered name of the Respondent is “Công ty TNHH Thương Mại Dịch Vụ Điện Lạnh Việt Thái” (“Viet Thai Refrigeration Service Trading Company Limited”), which evidently does not include the term “Electrolux”. Since there is no evidence that the Respondent was granted permission or authorization by the Complainant to either incorporate the term “Electrolux” in its corporate name or define it as the company for providing Electrolux maintenance and repair services, the inclusion of the term “Electrolux” into the corporate name of the Respondent as well as in the Disputed Domain Name as said above can be an indication of the Respondent’s intention to create an association with the Complainant, while such association does not exist in fact.
Furthermore, the use of the Complainant’s logo-typed trademark on the website may be further evidence of the Respondent’s intention to create a false relationship with the Complainant. For all the foregoing reasons, the Panel finds the Respondent’s use of the Disputed Domain Name cannot be considered to be a bona fide offering of goods or services.
Moreover, the Panel finds that there is no evidence that would suggest that the Respondent, as an individual, business, or other organization, has been commonly known by the Disputed Domain Name. The Panel further finds that no evidence has been presented that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. In fact, as it appears following the Complainant’s assertions and evidence with regard to the Respondent’s registration of the Disputed Domain Name, the Respondent had full knowledge of the trademark and had an intention to gain a profit by riding on the good reputation of the Complainant.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and the second element under paragraph 4(a) of the Policy is established. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an instance of “registration and use of a domain name in bad faith”.
The Panel finds that the Complainant has put forth evidence that the Respondent has registered and used the Disputed Domain Name in bad faith. The Respondent did not reply to the Complainant’s contentions and, therefore, has not refuted the Complainant’s contentions.
The Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registration of the Disputed Domain Name. In this regard, the Panel finds that the Complainant’s ELECTROLUX trademark has been registered on a worldwide basis. The Complainant’s ELECTROLUX trademark has been in use in, among other countries, Viet Nam where the Respondent resides.
The Disputed Domain Name comprises the ELECTROLUX trademark in its entirety, adding only the descriptive words “baohanh” and ”suachua” which are Vietnamese terms for “warranty” and “repair” respectively. Electrolux is being used in the Complainant’s ELECTROLUX trademark, trade name, and domain names , , which all well predate the registration of the Disputed Domain Name.
Also, the Panel finds that given the fact that the Complainant’s ELECTROLUX trademark, which is a coined word, without any dictionary meaning, is not descriptive of anything and devoid of meaning other than the products of the Complainant, it is very unlikely that the Respondent would have registered the Disputed Domain Name incorporating the trademark without knowledge of the trademark (see in the same way Hoffmann-La Roche Inc. v. Hightech Industries, Andrew Browne,WIPO Case No. D2010-0240; Volkswagen AG v. Swiss Recruitment,WIPO Case No. D2013-0534) and that it defies common sense to believe that the Respondent coincidentally selected this precise domain name without any knowledge of the Complainant and its trademark particularly noting the Respondent’s use of the Disputed Domain Name (see in the same way Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415; Volkswagen AG v. Swiss Recruitment, supra).
These facts show that the Respondent did not register the Disputed Domain Name in a fortuity. The Respondent obviously knew of the Complainant and its ELECTROLUX trademark before the registration of the Disputed Domain Name, and the Panel considers the registration an attempt by the Respondent as to take advantage of the Complainant’s goodwill.
The Panel also finds that the Respondent has used the Complainant’s trademark in its entirety, and the trademark is recognizable as such in the Disputed Domain Name. Further, the Panel finds that in addition to the unauthorized adoption of the Complainant’s trademark as a uniquely distinctive part in the Disputed Domain Name, the Respondent used, without permission, the Complainant’s logo-typed trademark on the website, and placed misleading information and statement that may create confusion or a false impression to the side of consumers that it has a relationship with the Complainant when it does not. In addition, as said in Section C above, the Respondent has no rights or legitimate interests in the Disputed Domain Name.
In the Panel’s view, this creates a likelihood of confusion as to sponsorship, affiliation with, and endorsement by the Complainant of the site to which the Disputed Domain Name resolves to. Therefore, the Panel finds that the likelihood of confusion as said is an indication of bad faith use of the Disputed Domain Name (See Philip Morris Inc. v. Alex Tsypkin, supra; The Procter & Gamble Company, Tambrands Inc. v. Reserved for Customers, MustN,WIPO Case No. D2009-0944; Aktiebolaget Electrolux v. Jose Manuel, WIPO Case No. D2010-2031).
In addition, the Panel notes the fact that the Respondent received a cease-and-desist letter and a reminder from the Complainant and did not respond to them. Instead, the Respondent continued to use the Disputed Domain Name as an address for the said active website until the date hereof. This is further indication of the Respondent’s bad faith and its intent to capitalize on the reputation and goodwill of the Complainant’s trademark even after the Respondent was informed by the Complainant under the cease-and-desist letter of such behavior.
With the said facts, the Panel finds that the Respondent intentionally registered and is using the Disputed Domain Name for commercial gain and that the Respondent’s use of the Disputed Domain Name appears to mislead consumers and confuse them by making them believe that the website is associated, fostered or recommended by the Complainant. Such misleading behavior is indicative of bad faith within the meaning of paragraph 4(b)(iv) of the Policy (see in the same way Aktiebolaget Electrolux v. Jose Manuel, supra).
Taking into account all of the above and the available record, the Panel finds that the Disputed Domain Name was registered and is being used by the Respondent in bad faith under paragraph 4(b)(iv) of the Policy, and the third element under paragraph 4(a) of the Policy is established. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, , be transferred to the Complainant.
Pham Nghiem Xuan Bac
Sole Panelist
Date: January 30, 2017
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